42 F. 60 -

42 F1d 60

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Case Text

so

FEDERAL REPORTER,

vol. 42.

specification that his invention consisted "in immersing paper, preferably not sized, first into a bath of molten naphthaline of a temperature as near the congelation point as practical for the operation of dipping, by which a heavy deposit of naphthaline is obtained. '.I;'his deposit is crystall.ine aud porous, peeling off easily, and its surface is rough and warty, brit, if the paper covered with its first coat is then dipped rapidly into a bath of molten naphthaline of a higher temperature,-say five degrees, -then the interstices between the crystals first deposited are filled up, and the coating becomes hard and compact, and the whole product is of a porcelain-like appearance, with smooth surface. By subsequent dipping,this coating of naphthaline may be increased in thickness to any degree." It appears from the specifica.tion that it had been proposed to make naphthaline paper by embedding a layer ofnaphHmline between two layers of paper. H is obvious that a profuse evaporation is furnished from the large surface of the patented paper, and that the naphthaline accomplishes its work without staining or entering into the meshes of the goods. The claim is as follows: .. As a new article of manufacture, the sheet a, having a coating, b, of
naphthaline, in two or more superposed layers, the first presenting a rough appearance, the second filling up the interstices of the first layer, and presenting a hard, compact, porcelaiti-like appearance, with a smooth surface, substantially as described."

. The defendant upon the argument made no criticism upon the patentability of the invention; there was no testimony upon the SUbject; the state of the art was apparently as recited in the specification; and, as the article is out of the domain of common knowledge, I have no reason to doubt the propriety of the action of the patent-office. The only question in the case is that of infringement, and that can hardly be called a question. for the defendants have no knowledge on the subject,-had no testirnony,"':"while the complainant's testimony was intelligent and definite, from a witness who is a competent expert, and who says that the article which the defendants have sold is manufactured in the manner described in the patent, and the exhibits apparently corroborate his ?pinion.. Let there be a decree for an injunction and. an accounting.

AMERICAN CABLE

Ry.

Co. 'D. MAYOR, ETC., OF THE CITY OF NEW YORK

et al.

OOU?'t,

PATENTS

S. D. New York. April 14, 1890.)

For INVENTIOliIS-INFRINGEMENT-PLEADING. Under Rev. St. U. S. § 4886, which provides for patents for inventions which have l10t b,een known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, and not in publio use or on sale for more than two years before the application t a bill for injunction which alleges that the patentt;le was the original inventor of tne patented improvement, which had not been patented to others with his knowledge or consent in any country, and had not, to· his or the orator's knowledge, been in pub-

AJrlBRICAN CABLE RY. CO. V. MAYOR, ETC., OF THE CITY OF NEW YORE.

61

lie use or on sale in the United States for more than two years before his aPl?l1oatioD for patent, and had not ever been known or ueed or described in any prInted publication in this or any foreign country before his application, sufllciently shows the patentability of the invention.

SHIPMAN, J. This is a general demurrer to the complainant's bill in equity to restrain the infringement of letters patent. The bill alleges that the patentee was the original, first, and sole inventor of a certain new and useful improvement in the construction of cable railways, fully described in the specification of the said letters patent, which had not been patented to himself or to others, with his knowledge or consent, in any country, and had not, to his or the orator's knowledge, been in public use or on sale in the l]nited States for more than two years prior to his said application for letters patent, and had not ever been known or used or described in any printed publication in this or any foreign country prior to his invention and discovery thereof, and application for letters patent of the United States therefor. The grounds of demurrer which were stated on the argument are-First, that there is no averment that the invention had not been patented in this or apy foreign country before the date of the invention, but that it is simply alleged that it had not been patented with his knowledge or consent, which is an immaterial matter, and is not the fact which is required by section 4886; and, secO'ndly, that the allegation in regard to public use or sale prior to the application is simply that the improvement had not been in such use to the patentee's or the complainant's knowledge, which is also an immaterial matter. Section 4886 is as follows: " Any person who has invented or discovered any new and useful * * · improvement thereof, not known or used by others in this country, and not patented or descrilJed in any printed publication in this or any foreign country, before his invention or discovery thereof, anq not in public use 01' on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may * * * obtain a patent therefor." The averments do not use the language of the statute, and are not in the customary form, and some of them are open to the objections which have been urged by the defendants; but, when all the averments are taken together, I think that they state, in an informal way, the facts which are prerequisites to a valid patent. The bill alleges that the patentee was the original and first inventor of the subsequently described new and useful improvement, which had never, prior to his invention thereof, been known or used or described in any printed publication in this or any foreign country. This averment is equivalent to one formally Baying that the invention had not been known or used by others in thie country, and had not been patented or described in print in this or a foreign country; for, if it had never been known by anybody in this or any other country before the date of the invention, it could not have been patented.

.REPORTER, vol.

4:2l

bill also alleges'that the ,improvement hlld'not. been, to the pause or on sale in the United ,'tentee's;or the States for more than two years prior to the application for letters patent, and had never been known or used in this to the application. This is an express averlllent that it had neve,rbeen 'in public ,use for any time before the lind, if it had neyer been known by anybody before the application, it could not have been on' sale, for the and presentation of. an invention in. the market creates a knowledge which is inconsistent with the averment. thai nobody knew made a more,simple and more of its existence. paragraph if he 4;:td followed the language 0'£ the statute, but I th.ink that his averments are adequate, and they apparently comply with *t).6 ayerments which were regarded as sufficient in ¥t;Ooy v. Nelson, 121 U. S. 484, 7 Rep. 1000. ' · The demurrer is not sustained.

at:'

CLOTWORTHYt1. SCHEPP.

(Oircuit COlm, S.D.

New

Y'ork. April 21,1890.)

L 'rBADB-lfARll:s";"INJUNd'l'rol'f: . 'l'he manllfacturer of. aPi uPicooked puddiPig, ,put up iPi paokages, under the trademlj.rk name of "PuddiPie," caPiPiot ePijoiPi the maker of a similarpreparatioPi from usiPig the Word "PuddiPig" in describiPig 'it.
Sl.SAME. rhe use of the word" Rose, "iPi cotlJlectioPi with the word" VaPiil1a, "as a trademark, is PiO grouPid for ePijoilliPig a rival maker of similar products, COPitaiPiiPig those well-known fiavors, from uBiPig those words iPi describing his goods. 8. BAM.. . , A,manufacturer who falsely represents the composition of his goods by the labels on his packages is in no positioPi to enjoin a rival manufacturer from usiPig similar labels aPid packages, on the groUPid that the latter thereby deceives the pubUo. ,

Motion for Preliminary Injunction. Bill by William P. Clotworthy against Leopold S('hepp to restrain certain alleged infringements of complainant's Wm. Hen1"!J Browne, for complainant. . Theron . G. Strong, for defendant. LAOOMBE, J. The complainant owns two registered trade-marks,"';';' the word "Puddine" (an arbitrary word symbol) applied to an article of prepared. food, and the word" Rose," also applied to the same in connectionwiththe word "Vanilla. " Thislast word is inaccurately stated in the be "an arbitrary and fanciful word symbol." It in fact describes a well-known flavoring extract, and, when used in. every-day speech with food products, implies that such products are fla:vored with rose. Complainants seek to enjoin defendant from putting up and selling defendant's food preparation in certain packages, which